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Keywords

plaintiffdefendanttrademark
appealtrialmotiontrademarkappelleerelevance

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Star Industries, Inc. v. Bacardi & Co. Ltd., 412 F.3d 373, 75 U.S.P.Q.2d 1098

Facts

Star Industries, Inc. produces the 'Georgi' brand of orange-flavored vodka and claims that Bacardi's use of a similar stylized 'O' design on its orange-flavored rum infringes on its trademark. Star's design was deemed sufficiently stylized to be inherently distinctive, but the court found it to be a weak mark entitled to limited protection. The district court ruled in favor of Bacardi, concluding that there was no likelihood of confusion between the two products despite their competitive proximity.

Star Industries, Inc. produces alcoholic beverages including, of particular relevance to this appeal, the 'Georgi' brand of vodkas. Georgi vodka is sold primarily in New York state, and is one of the top selling vodkas in the New York metropolitan area. It is generally cheaper than the leading nationally distributed vodkas.

Issue

Did Bacardi's use of a stylized 'O' design on its rum label infringe upon Star's trademark rights in its 'O' design for vodka?

Did Bacardi's use of a stylized 'O' design on its rum label infringe upon Star's trademark rights in its 'O' design for vodka?

Rule

To succeed in a trademark infringement action under the Lanham Act, a plaintiff must prove that its mark is entitled to protection and that the defendant's use of its own mark is likely to cause confusion with the plaintiff's mark. A mark may be inherently distinctive or acquire secondary meaning. The likelihood of confusion is assessed using an eight-factor test, including the strength of the mark and similarity of the marks.

Analysis

The court analyzed the distinctiveness of Star's 'O' design and determined it was a weak mark, which limited its protection. The court also evaluated the likelihood of confusion using the eight-factor test, concluding that while the products were in competitive proximity, the differences in their labels and the sophistication of consumers meant that confusion was unlikely.

The district court erred when it described the Star 'O' as a basic geometric shape or letter, and therefore rejected inherent distinctiveness and required a showing of secondary meaning. The Star 'O' is not a 'common basic shape' or letter, and the district court's holding to the contrary was premised on a misunderstanding of this trademark law concept.

Conclusion

The court affirmed the district court's judgment in favor of Bacardi, holding that Star failed to establish a likelihood of confusion despite the similarities in the designs.

We conclude that the district court erred in holding Star's 'O' design not protectable as a trademark. We therefore need not consider whether the district court erred in denying Star's motion to reopen the trial record. However, as we agree with the district court that Star has not established a likelihood of confusion with Bacardi's product, we affirm the district court's judgment for appellees.

Who won?

Bacardi prevailed in this case because the court found that Star Industries did not demonstrate a likelihood of confusion between its 'O' design and Bacardi's similar design. The court emphasized that the differences in the labels and the context in which the products were sold contributed to the conclusion that consumers would not be confused about the source or sponsorship of the products.

Bacardi prevailed in this case because the court found that Star Industries did not demonstrate a likelihood of confusion between its 'O' design and Bacardi's similar design.

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